[Federal Register Volume 76, Number 79 (Monday, April 25, 2011)]
[Proposed Rules]
[Pages 22854-22861]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-9805]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Chapter I

[Docket No.: PTO-P-2011-0018]


Streamlined Patent Reexamination Proceedings; Notice of Public 
Meeting

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of public meeting; request for comments.

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SUMMARY: This document announces a public meeting to solicit public 
opinions on a number of changes being considered by the United States 
Patent and Trademark Office (USPTO) to streamline the procedures 
governing ex parte and inter partes reexamination proceedings. These 
changes are intended to achieve faster, more efficient resolution of 
the substantial new question of patentability (SNQ) for which 
reexamination is ordered. The proposed changes in this document are 
divided into three categories: changes to both ex parte and inter 
partes reexaminations, changes specific to ex parte reexamination, and 
changes specific to inter partes reexamination. After soliciting public 
opinions regarding this document, the USPTO may seek to adopt one or 
more of the proposed changes or a modified version thereof, or other 
changes suggested by the public, through a rule making or through 
internal operational changes as appropriate.

DATES: The public meeting will be held on June 1, 2011, beginning at 
1:30 p.m.
    Persons interested in attending the meeting must register by 5 
p.m., Eastern Standard Time (EST), on May 25, 2011.
    Written comments must be submitted by June 29, 2011.

ADDRESSES: The public meeting will be held at the USPTO, in the South 
Auditorium of Madison West, 600 Dulany Street, Alexandria, VA 22314.
    Written comments should be sent by electronic mail message over the 
Internet addressed to <a href="/cdn-cgi/l/email-protection#d9abbcbca1b8b4b0b4a9abb6afbcb4bcb7adbab6b4b4bcb7adaa99acaaa9adb6f7beb6af"><span class="__cf_email__" data-cfemail="9deff8f8e5fcf0f4f0edeff2ebf8f0f8f3e9fef2f0f0f8f3e9eedde8eeede9f2b3faf2eb">[email protected]</span></a>. Comments may 
also be submitted by mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Kenneth M. Schor. Although comments may be 
submitted by mail, submission via e-mail to the above address is 
preferable.
    The written comments will be available for public inspection at the 
Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the USPTO Internet Web site (address: http://www.uspto.gov). 
Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included.
    For Registration to Give a Presentation at the Meeting: If you wish 
to make an oral presentation at the meeting, you must register by 
sending an e-mail to <a href="/cdn-cgi/l/email-protection#463423233e272b2f2b36342930232b23283225292b2b2328323506333536322968212930"><span class="__cf_email__" data-cfemail="b1c3d4d4c9d0dcd8dcc1c3dec7d4dcd4dfc5d2dedcdcd4dfc5c2f1c4c2c1c5de9fd6dec7">[email protected]</span></a>, by 5 p.m. 
EST, on May 11, 2011. See the registration information provided below.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor, Office of Patent 
Legal Administration, Office of the Associate Commissioner for Patent 
Examination Policy, by telephone at 571-272-7710, or by mail addressed 
to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450.
    Inquiries regarding the current reexamination practice may be 
directed to the Office of Patent Legal Administration, by telephone at 
(571) 272-7703, or by electronic mail at <a href="/cdn-cgi/l/email-protection#1f4f7e6b7a716b4f6d7e7c6b767c7a5f6a6c6f6b7031787069"><span class="__cf_email__" data-cfemail="2777465342495377554644534e444267525457534809404851">[email protected]</span></a>.

SUPPLEMENTARY INFORMATION: This document announces a public meeting to 
solicit public opinions on a number of changes being considered by the 
USPTO to streamline the procedures governing ex parte and inter partes 
reexamination proceedings. These changes are intended to achieve 
faster, more efficient resolution of the SNQ for which reexamination is 
ordered.

[[Page 22855]]

Moreover, the changes proposed in this document are complementary to 
the post-grant provisions in the pending America Invents Act currently 
being considered by Congress. In particular, the America Invents Act 
would not alter ex parte reexamination, and it would provide a 
transition period of several years during which inter partes 
reexamination could still be requested. Therefore, it is important for 
the USPTO to continue its efforts to improve the existing reexamination 
system.
    On August 5, 2010, the USPTO explained that it is considering a 
number of short- and long-range initiatives that can be implemented in 
three phases to reduce pendency and improve efficiency, while 
maintaining quality, in reexamination proceedings. See Optional Waiver 
of Patent Owner's Statement in Ex Parte Reexamination Proceedings, 75 
FR 47269 (Aug. 5, 2010).
    Phase I includes a number of streamlined procedures and optional 
programs in which the Patent Owner and Third Party Requester may elect 
to participate in order to gain the benefit of shorter pendency. For 
example, in the above-mentioned notice dated August 5, 2010, the USPTO 
implemented an optional procedure allowing the Patent Owner in an ex 
parte reexamination to waive the Patent Owner's statement under 35 
U.S.C. 304, and thereby enable the USPTO to issue a first Office action 
on the merits (FAOM), together with or soon after mailing the order 
granting reexamination. Also as part of phase I, the USPTO had 
previously implemented a streamlined procedure for appeal brief review 
in both ex parte and inter partes reexamination proceedings. See 
Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination 
Proceedings, 75 FR 29321 (May 25, 2010); Streamlined Procedure for 
Appeal Brief Review in Inter Partes Reexamination Proceedings, 75 FR 
50750 (Aug. 17, 2010). Moreover, in order to process reexaminationt 
proceedings more efficiently and expeditiously, the USPTO has increased 
the number of examiners working exclusively on reexamination 
proceedings, made changes in the handling and scanning of documents, 
instituted an improved petitions tracking system, and designed new 
forms for answering certain types of petitions. In addition, the 
USPTO's Central Reexamination Unit has identified a number of 
automation and information technology upgrades that will be instituted 
as part of the USPTO's end-to-end electronic processing system, which 
will greatly improve the processing and tracking of all stages of 
reexamination proceedings.
    However, the USPTO alone cannot reduce reexamination pendency, 
particularly under its existing procedures. Streamlining these 
procedures, including those governing the practices of the Patent Owner 
and Third Party Requester, will be necessary if a more significant 
reduction in pendency is to be achieved. Therefore, in phases II and 
III of the USPTO's three-phase initiative, the USPTO will consider the 
data gathered from phase I and solicit public opinion on additional 
procedural changes, rule making proposals, and administrative proposals 
for statutory changes.
    The instant notice seeks public input as the USPTO considers moving 
into phases II and III. In particular, the instant notice proposes a 
number of changes intended to reduce pendency while maintaining quality 
in ex parte and inter partes reexamination proceedings. The proposed 
changes in this notice are divided into three categories: (A) Changes 
to both ex parte and inter partes reexaminations, (B) changes specific 
to ex parte reexamination, and (C) changes specific to inter partes 
reexamination. After soliciting public opinions regarding this notice, 
the USPTO may seek to adopt one or more of the proposed changes or a 
modified version thereof, or other changes as recommended by the 
public, through rule making or through internal operational changes, as 
appropriate.

A. Proposed Changes to Both Ex Parte and Inter Partes Reexaminations

1. Requester Must Separately Explain How Each SNQ Presented in the 
Request Is ``New'' Relative to Other Examinations of the Patent Claims

    This proposed change is intended to allow the USPTO to more quickly 
determine whether the request raises an SNQ based on a new, non-
cumulative technological teaching. The proposed change also ensures 
that the Requester adequately explains how each SNQ presented in the 
request is ``new'' relative to other examinations of the patent claims 
(rather than merely stating what the SNQ is believed to be). Current 
practice does not set forth a consistent format in which the required 
information should be presented in the request. This lack of 
consistency results in requests that are denied a filing date and whose 
noncompliance must be corrected by the Requester, which delays the 
proceeding.
    As explained in the Manual of Patent Examining Procedure (MPEP) 
Sec. Sec.  2216, 2614:

    It is not sufficient that a request for reexamination merely 
proposes one or more rejections of a patent claim or claims as a 
basis for reexamination. It must first be demonstrated that a patent 
or printed publication that is relied upon in a proposed rejection 
presents a new, non-cumulative technological teaching that was not 
previously considered and discussed on the record during the 
prosecution of the application that resulted in the patent for which 
reexamination is requested, and during the prosecution of any other 
prior proceeding involving the patent for which reexamination is 
requested.

    In order to ensure that requests comply with MPEP Sec. Sec.  2216 
and 2614, the USPTO would require, for each SNQ presented in the 
request, a statement of how the technological teaching in the 
references that support the SNQ is new and non-cumulative of what had 
been considered in any previous or pending USPTO examination of the 
patent claims. For clarity, this statement would be provided in a 
section of the request dedicated solely to explaining how each SNQ is 
believed to be new.

2. Requester Must Explain How the References Apply to Every Limitation 
of Every Claim for Which Reexamination Is Requested

    This proposed change is intended to allow the USPTO to more quickly 
address the requisite ``pertinency and manner of applying cited prior 
art to every claim for which reexamination is requested'' (35 U.S.C. 
302, 311) presented in the request. It is also intended to allow 
examiners to more quickly write a First Action on the Merits (FAOM) 
based on the references cited in the request. Current request practice 
does not require the use of a consistent format in which the required 
information must be presented. This inconsistency results in delay and 
potential re-work because Requesters do not consistently map the prior 
art teachings to the limitations of the claims.
    A statement of how the references apply to every limitation of the 
claims would be required to be provided in a section of the request 
dedicated solely to explaining how the references apply. Requests filed 
by a Third Party Requester must clearly set forth a proposed rejection 
for each claim for which reexamination is requested, with separate 
rejections based on anticipation, obviousness, and/or double patenting. 
Requests filed by a Patent Owner must include an anticipation, 
obviousness, and/or double patenting analysis for each claim for which 
reexamination is requested. In all cases, a limitation-by-limitation 
explanation of the manner of applying

[[Page 22856]]

the references must be presented in the form of a claim chart or 
narrative explanation, but not both, as providing both tends to 
lengthen the request and may result in inconsistencies between the two 
explanations.
    To avoid confusion, the explanation must not combine multiple or 
alternative proposed rejections or proposed combinations of references. 
Thus, a proposed rejection of claims 1-5 as being ``obvious over 
references A or B or C, in view of references C or D or E, optionally 
in view of references F or G,'' is improper. Likewise a proposed 
rejection of claims 1-5 being ``either anticipated or obvious over 
references A or B,'' is improper. Each statutory ground of rejection 
and each combination of references must be expressed and explained 
separately.

3. Requester Must Explain How Multiple SNQs Raised in the Same Request 
Are Non-Cumulative of Each Other; Cumulative SNQs Will Be Deemed to 
Constitute a Single SNQ

    This proposed change is intended to streamline reexamination in 
cases where a request includes multiple references cited in support of 
separate SNQs, but which are all directed to the same claims and are 
all based on the same new technological teaching. The current practice 
of separately addressing multiple, cumulative SNQs prolongs pendency 
and is an inefficient means of addressing the question raised by a new 
technological teaching that is common among multiple, cumulative SNQs.
    The instant notice proposes that cumulative SNQs will be deemed to 
constitute a single SNQ. For example, if a request cites ten prior art 
references in support of ten proposed SNQs, and all ten references are 
cited for the same claim limitation found missing in a prior 
examination, the USPTO will construe the request as raising a single 
SNQ based on the single, new technological teaching.
    Where a Requester asserts multiple SNQs against the same claim, it 
is the Requester who is in the best position to narrow the dispute by 
explaining how the SNQs present unique issues of patentability. The 
Requester will be required to explain, in a separate section of the 
request, how each SNQ is substantially different from all other SNQs 
that are being asserted against the same claims in the same request. 
Cf. In re Katz Interactive Call Processing Pat. Litig., ----F.3d----, 
2011 WL 607381, at *3-4 (Fed. Cir. Feb. 18, 2011) (holding that it was 
not an abuse of discretion to require the party that was ``in the best 
position to narrow the dispute'' to show how non-selected claims were 
``substantially different,'' in terms of validity and/or infringement, 
from selected claims).
    SNQs that are not persuasively explained to be substantially 
different from each other will be deemed to constitute a single SNQ 
from which the examiner will select the best proposed rejections based 
on the best cited references, as discussed below in Part A.4. Any order 
granting reexamination will identify the SNQs for which reexamination 
is granted, and will further identify any SNQs that are found to be 
cumulative of other SNQs. The examiner's designation of an SNQ as 
``cumulative'' is not petitionable; however, the examiner's selection 
of any ``representative'' rejections (see Part A.4) from among the 
cumulative SNQs may be challenged by the Third Party Requester in inter 
partes reexamination in the manner set forth in Part C.1 below.

4. The Examiner May Select One or More Representative Rejections From 
Among a Group of Adopted Rejections.

    In the FAOM, for each SNQ for which reexamination is granted, the 
examiner will identify each of the Requester's proposed rejections as 
either ``adopted'' or ``not adopted.'' A proposed rejection is 
``adopted'' if the examiner determines that it establishes a prima 
facie case of unpatentability. A proposed rejection is ``not adopted'' 
if the examiner determines that it fails to establish a prima facie 
case of unpatentability.
    Where multiple rejections are adopted against a single claim, the 
examiner may select one or more ``representative'' rejections from the 
group of adopted rejections. The examiner's determination that a 
rejection is ``representative'' means that the examiner believes that 
all rejections within the group of adopted rejections will clearly fall 
if the representative rejection is not sustained. The examiner will 
clearly identify which rejections, if any, are being treated as a group 
and which rejection(s) within the group is/are representative of the 
group. The examiner's reasons in support of each representative 
rejection will be fully discussed in the Office action. For any 
rejection within the group which is not designated as a representative 
rejection, the examiner may simply state, to the extent the examiner 
agrees with the Requester, that the rejection is adopted for the 
reasons set forth in the request, and incorporate by reference the 
Requester's limitation-by-limitation explanation of the manner of 
applying the references (see Part A.2).
    In deciding which rejections to designate as representative, the 
examiner will apply the guidance set forth in MPEP Sec.  706.02(I), 
quoted below:

    Prior art rejections should ordinarily be confined strictly to 
the best available art. Exceptions may properly be made, for 
example, where:
    (A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on 
a particular interpretation of a claim;
    (B) a claim is met only in terms by a reference which does not 
disclose the inventive concept involved; or
    (C) the most pertinent reference seems likely to be antedated by 
a 37 CFR 1.131 affidavit or declaration.
    Such rejections should be backed up by the best other art 
rejections available. Merely cumulative rejections, i.e., those 
which would clearly fall if the primary rejection were not 
sustained, should be avoided.

    If the Patent Owner subsequently overcomes the representative 
rejections of a claim, then the examiner will consider whether any 
other rejection within the group overcomes the deficiency of the 
representative rejections, and will do so prior to confirming the 
patentability of that claim. In this way, no claim will be confirmed as 
patentable without having received due consideration of all rejections 
within the group. For this reason, it is advisable for the Patent Owner 
to explain, in its response to the FAOM, why the Patent Owner's 
arguments against any representative rejection would likewise overcome 
all other rejections within the group. The Patent Owner may also 
present any specific argument or evidence directed to any rejection 
within the group.
    If the Patent Owner appeals the final rejection of a claim, then 
the appeal must be taken from all adopted rejections of that claim, not 
just from the representative rejections. The Board of Patent Appeals 
and Interferences (Board) may review any rejection within the group of 
adopted rejections in order to affirm the examiner as to that claim. 
The affirmance of a rejection of a claim on any of the grounds 
specified will constitute a general affirmance of the examiner's 
rejections of that claim, except as to any ground specifically 
reversed.
    The examiner's designation of a rejection as ``representative'' is 
not petitionable; however, this designation may be challenged by the 
Third Party Requester in inter partes reexamination in the manner set 
forth in Part C.1 below.

5. Requester's Declaration and Other Evidence Will Be Mainly Limited to 
the Request

    This proposed change is intended to encourage compact prosecution 
by requiring the Requester to submit all

[[Page 22857]]

necessary evidence in the initial request and thereby reduce the need 
for later submissions. In inter partes reexamination, any further 
submission of evidence (including declarations, affidavits, and test 
data) by the Third Party Requester in the proceeding will be limited to 
rebutting a point made in an examiner's Office action or in a Patent 
Owner's response. In ex parte reexamination, the further submission of 
evidence by the Third Party Requester will be limited to rebutting a 
point made in the Patent Owner's statement under 35 U.S.C. 304, if any 
such statement is filed. In all cases, when submitting new evidence, 
the Third Party Requester must identify the specific point to be 
rebutted and explain how the new evidence rebuts it.

6. Patent Owner's Amendments and Evidence Will Be Mainly Limited to the 
First Action Response

    This proposed change is intended to encourage compact prosecution 
by ensuring that the Patent Owner's amendments and evidence (including 
declarations, affidavits, and test data) are presented early in 
reexamination. In ex parte reexamination, the Patent Owner's submission 
of amendments and evidence will be generally limited to the earlier of: 
(1) The Patent Owner's optional statement under 35 U.S.C. 304, if the 
Patent Owner does not waive the statement; or (2) if the Patent Owner 
waives the statement, the Patent Owner's response to an FAOM. In inter 
partes reexamination, the Patent Owner's amendment and declaration 
evidence will be generally limited to the Patent Owner's response to 
the FAOM. Any further submission of amendments or declaration evidence, 
in either ex parte or inter partes reexamination, will be limited to 
overcoming a new ground of rejection entered in any non-final Office 
action.
    Amendments filed after a final Office action will only be admitted 
to (1) cancel claims, (2) rewrite dependent claims into independent 
form, (3) comply with requirements or suggestions set forth in a final 
Office action, or (4) respond to any new ground of rejection designated 
in an examiner's answer or Board decision. For a discussion of what 
constitutes a ``final Office action'' in inter partes reexamination, 
see Part C.2 below.

7. Claim Amendments Will Not Be Entered Unless Accompanied by a 
Statement Explaining How the Proposed New Claim Language Renders the 
Claims Patentable in Light of an SNQ

    Claim amendments that are not germane to any SNQ tend to 
unnecessarily expand the scope of the proceeding and result in longer 
reexamination pendency. In such cases, the examiner is often required 
to conduct an entirely new search of the prior art and to consider 
issues beyond those raised in the request. All of this detracts from 
what should otherwise be the central focus of the reexamination--
namely, a ``resolution of the question'' for which reexamination was 
ordered. 35 U.S.C. 304, 313.
    The change proposed herein is intended to allow the USPTO to 
determine whether a Patent Owner's amendment should be permitted entry, 
given that ``amendment of claims during reexamination is limited to 
amendment in light of prior art raising a substantial new question of 
patentability.'' In re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994). In 
Freeman, the Federal Circuit stated:

    [T]he ability of a patentee to amend claims during reexamination 
must be seen in light of the fundamental purpose of reexamination--
the determination of validity in light of a substantial new question 
of patentability. Thus, amendment of claims during reexamination is 
limited to amendment in light of prior art raising a substantial new 
question of patentability.

    Id. (emphasis added). In Freeman, the Patent Owner amended the 
patent claims during reexamination, not to distinguish the prior art, 
but to avoid an unfavorable interpretation that a court had given those 
claims in an earlier litigation. The Board affirmed the examiner's 
rejection under 35 U.S.C. 305 because the amendments were found to 
broaden the scope of the claims as interpreted by the court. In 
appealing the Board's decision, the Patent Owner argued that the 
court's claim interpretation did not bind the Patent Owner in the 
reexamination under the doctrine of issue preclusion because, according 
to the Patent Owner, the reexamination offered the Patent Owner ``the 
opportunity to amend his claims `in response to a decision adverse to 
the patentability of a claim of a patent.''' Id. (quoting 35 U.S.C. 
305). The Federal Circuit disagreed. It held that the Patent Owner 
``never had the option of amending his claims during reexamination'' in 
a manner having ``nothing to do with a substantial new question of 
patentability.'' Id. (emphasis added). The Federal Circuit therefore 
concluded that the doctrine of issue preclusion applied against the 
Patent Owner, and thus affirmed the broadening rejection.
    In view of the foregoing, and in order to ensure that all proposed 
claim amendments, including new claims, are directed to resolving the 
SNQ, the USPTO will require the Patent Owner to submit a statement 
explaining how the proposed new claim language (apart from the original 
claim language) renders the claims patentable over the references 
raising an SNQ. The role of this explanatory statement is to allow the 
USPTO to determine whether a proposed amendment is being properly 
submitted ``in light of prior art raising a substantial new question of 
patentability,'' or whether the amendment should be refused entry 
because it has ``nothing to do with a substantial new question of 
patentability.'' Freeman, 30 F.3d at 1468. The amendment will not be 
entered if the necessary statement is either missing or conclusory 
(e.g., the statement merely says ``the amended claims distinguish over 
the prior art''). Nevertheless, so long as the Patent Owner explains 
how the proposed new claim language distinguishes the invention over 
the prior art, the amendment will be entered even if, on the merits, 
the examiner disagrees with the Patent Owner that the amendment 
overcomes the rejection. Moreover, the amendment will be entered even 
if the new or amended claim gives rise to a new ground of rejection. 
Where the requirement is satisfied as to fewer than all of the proposed 
new or amended claims, the proposed amendment will be entered in part 
as to the claims for which the requirement is satisfied.
    It is important to note that the submission of an amendment 
unrelated to any SNQ is not, in itself, a basis for rejecting the 
amended claim; rather it is a basis for refusing entry of the 
amendment. In Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157, 1185 
(Fed. Cir. 2008), the Federal Circuit stated that the prohibition 
against enlarging the scope of a claim is the only ``substantive 
limitation'' in 35 U.S.C. 305, and is thus the only basis on which to 
invalidate a claim under section 305 in litigation after the amendment 
has been entered. In contrast to this ``substantive limitation,'' the 
court in Freeman stated that amending claims during reexamination in a 
manner having ``nothing to do with a substantial new question of 
patentability'' is not a ``procedural opportunity available in the 
[US]PTO.'' Freeman, 30 F.3d at 1468-69 (stating that the Patent Owner 
``never had the option of amending his claims'' in such a manner). It 
follows that the USPTO should only allow entry of a proposed claim 
amendment if it is presented to resolve an SNQ; however, once the 
amendment is entered, a rejection based on broadening is the only 
substantive

[[Page 22858]]

ground of rejection available under 35 U.S.C. 305 and 314.
    The refusal to enter a proposed amendment is petitionable and not 
appealable to the Board. See In re Kline, 474 F.2d 1325, 1329 (CCPA 
1973).

8. Petitions Practice Will Be Clearly Defined

    To the extent possible, the USPTO seeks to specify when, how, and 
by whom any petition under 37 CFR 1.181-1.183, and any opposition 
thereto, may be filed in reexamination proceedings. By providing clear 
guidance in this area, the USPTO hopes to reduce the number of improper 
or duplicative petitions that are currently filed, including multiple 
concurrent petitions for a single item of requested relief, unjustified 
multiple iterations of petitions for an item of relief, petitions to 
resolve issues that are appealable rather than petitionable, and papers 
improperly opposing another party's petition.
    The table below sets forth (1) the various reexamination-related 
petitions (both proper and improper) that are commonly filed based on 
the type of relief requested, (2) whether the relief is properly sought 
by petition (and if so, under what section of 37 CFR), and (3) whether 
the petition may be opposed by another party.

        Examples of Petitions Filed in Reexamination Proceedings
------------------------------------------------------------------------
        Relief requested            Petitionable?         Opposable?
------------------------------------------------------------------------
Review of refusal to grant ex    Yes--1.181........  No.
 parte or inter partes reexam
 (see MPEP 2248, 2648).
Vacate as ultra vires an order   Yes--1.181........  Yes.
 granting ex parte or inter
 partes reexam (see MPEP 2246,
 2646).
Review of a finding of an SNQ    No (but see 75 FR   No.
 in an order granting ex parte    36357 in ex parte
 or inter partes reexam (see 75   reexam).
 FR 36357).
Vacate filing date of ex parte   Yes--1.181........  Yes.
 or inter partes reexam based
 on failure to comply with 37
 CFR 1.510 or 1.915.
Extension of time to respond to  Yes--1.550(c).....  No.
 an Office action by Patent
 Owner in ex parte reexam.
Extension of time to respond to  Yes--1.956........  No.
 an Office action by Patent
 Owner in inter partes reexam.
Extension of time to submit      No................  No.
 comments by Third Party
 Requester (see 35 USC
 314(b)(2)).
Extension of time to file a      Yes--1.550(c).....  No.
 notice of appeal or brief on
 appeal by Patent Owner in ex
 parte reexam (see 37 CFR
 41.31, 41.37, 41.43).
Extension of time to file a      Yes--1.183........  No.
 notice of appeal or brief on
 appeal by any party in inter
 partes reexam (see 37 CFR
 41.61, 41.66).
Striking another party's         Yes--1.181........  Yes.
 improper paper (or portion
 thereof) from the file.
Protection of proprietary        Yes--1.59(b)......  Yes.
 information being submitted
 under seal.
Waiver of page or word limit     Yes--1.183........  No.
 requirement.
Review of refusal to enter       Yes--1.181........  Yes.
 amendment.
Withdrawal of final Office       Yes--1.181........  Yes.
 action.
Revival of terminated            Yes--1.137(a).....  No.
 proceeding based on Patent
 Owner's ``unavoidable'' delay
 and acceptance of late paper.
Revival of terminated            Yes--1.137(b).....  No.
 proceeding based on Patent
 Owner's ``unintentional''
 delay and acceptance of late
 paper.
For jurisdiction to be           No................  No.
 transferred to the Office of
 Patent Legal Administration.
Suspend inter partes reexam for  Yes--1.182........  Yes.
 ``good cause'' under 35 USC
 314(c).
Terminate inter partes reexam    Yes--1.182........  Yes.
 based on estoppel under 35 USC
 317(b).
------------------------------------------------------------------------

    The table above reflects the USPTO's current practice. The USPTO is 
interested to hear what changes can and should be made to its current 
practice in order to eliminate undue delays associated with petitions 
and oppositions.

B. Proposed Changes Specific to Ex Parte Reexamination

1. Make Permanent the Pilot That Allows the Patent Owner to Optionally 
Waive the Patent Owner's Statement

    In light of the fact that only about ten percent of Patent Owners 
elect to file a statement under 35 U.S.C. 304 following an order for ex 
parte reexamination, the USPTO launched a pilot to allow Patent Owners 
to waive this statement altogether. See Optional Waiver of Patent 
Owner's Statement in Ex Parte Reexamination Proceedings, 75 FR 47269 
(Aug. 5, 2010). The goal of this pilot is to eliminate the delay 
associated with the examiner having to wait two months under 35 U.S.C. 
304 before beginning work on the FAOM in the majority of cases where 
the Patent Owner does not file a statement in response to the order 
granting reexamination. This delay is unique to ex parte reexaminations 
because inter partes reexaminations do not have a two-month statement 
period between the grant of the order and the mailing of the FAOM. See 
35 U.S.C. 313 (providing, in relevant part, that ``[t]he order may be 
accompanied by the initial action of the Patent and Trademark Office on 
the merits of the inter partes reexamination''). For this reason, the 
average time between the filing of the request and the mailing of an 
FAOM in inter partes reexamination has historically been shorter 
(indeed, nearly half as long) as that in ex parte reexamination.\1\
---------------------------------------------------------------------------

    \1\ See USPTO Reexamination Operational Statistics, available at 
http://www.uspto.gov/patents/stats/Reexamination_Information.jsp 
(average number of months, per quarter in FY 2010, between the 
reexam request and the FAOM, for ex parte: 7.6, 7.8, 7.4, 7.5; for 
inter partes: 4.4, 4.2, 3.6, 3.3).
---------------------------------------------------------------------------

    Under the pilot, the USPTO contacts the Patent Owner, via 
telephone, after the reexamination request is given a filing date but 
before any decision on the request has been made. The telephone 
communication is limited to an inquiry regarding whether the Patent 
Owner wishes to waive the right to file a statement under 35 U.S.C. 304 
in the event that the reexamination request is granted. Any discussion 
of the merits of the proceedings (e.g., the patentability of the 
claims) is not permitted. The Patent Owner's decision to either waive 
or not waive the statement is made of

[[Page 22859]]

record in an interview summary, and a copy of the summary is mailed to 
both the Patent Owner and any Third Party Requester. If the Patent 
Owner agrees to waive the statement, then the examiner can mail an 
order for ex parte reexamination together with or soon after mailing 
the FAOM. The initial results of the pilot are encouraging. In view of 
these results, the USPTO proposes to make the pilot permanent through a 
notice of proposed rule making.

2. Where the Patent Owner Does Not Waive the Statement, the Order 
Granting Reexamination Will Include a Provisional FAOM, Which May Be 
Made Final in the Next Action

    This proposed change is intended to streamline reexamination and 
reflects the fact that the Patent Owner has a right, under 35 U.S.C. 
304, to file a statement, together with evidence and amendments, in 
order to distinguish the claimed invention from the prior art. If the 
Patent Owner does not waive this statement when contacted by the USPTO 
pursuant to the Optional Waiver of Patent Owner's Statement in Ex Parte 
Reexamination Proceedings, 75 FR 47269 (Aug. 5, 2010), and if the 
examiner determines that the reexamination request raises an SNQ, then 
the examiner will mail an order granting ex parte reexamination 
together with a provisional FAOM indicating which claims stand 
provisionally rejected or provisionally confirmed.
    If, in response to a provisional FAOM, the Patent Owner either does 
not file a statement or files a statement that fails to overcome all 
provisional rejections, then, to the extent the rejections have not 
been overcome, the examiner will adopt in the next action the pertinent 
portions of the provisional FAOM which were not overcome. For purposes 
of determining whether this next action will be made final, the 
examiner will treat the provisional FAOM as if it were an actual FAOM 
at the time it was mailed, and will apply the guidance set forth in 
MPEP Sec.  706.07(a) (Final Rejection, When Proper on Second Action).

C. Proposed Changes Specific to Inter Partes Reexamination

1. Third Party Requester May Dispute the Examiner's Designation That a 
Rejection is ``Representative'' of Other Rejections in the Group

    If an examiner designates a rejection as ``representative'' of a 
group of adopted rejections (see Part A.4 above), then the Third Party 
Requester will have an opportunity to dispute this designation to both 
the examiner and the Board. In particular, after the Patent Owner files 
a response to the FAOM, then the Third Party Requester may file 
comments in which the Third Party Requester supports the examiner's 
reasons for adopting a group of rejections but further argues that one 
or more rejections within the group of adopted rejections would stand 
even if the representative rejection is overcome. If the examiner 
agrees with the Third Party Requester that all rejections within the 
group do not ``stand or fall'' with the representative rejection, then 
the examiner will say so in the next action. This next action may be 
made final under MPEP Sec.  706.07(a) (Final Rejection, When Proper on 
Second Action).
    Similarly, after the Patent Owner files an appeal of a final 
rejection, the Third Party Requester may file a respondent's brief in 
which the Third Party Requester supports the examiner's final 
rejections but further argues that one or more final rejections in the 
group would stand even if the representative rejection is reversed. 
This further argument will ensure that, in the event the representative 
rejection is reversed, the Board will have the benefit of the Third 
Party Requester's position as to the other rejections within the group. 
The Board may review any rejection within the group of adopted 
rejections in order to affirm the examiner as to that claim. For 
further discussion of the Third Party Requester's briefing on appeal in 
inter partes reexamination, see Part C.3 below.

2. Final Office Action Closes Prosecution and Triggers Appeal Rights

    This proposed change is intended to reduce delays in inter partes 
reexaminations by consolidating the action closing prosecution under 37 
CFR 1.949 and the right of appeal notice under 37 CFR 1.953, and 
replacing them with one final Office action. The final Office action 
will identify the status of each claim and will explain the reasons for 
each representative rejection and each decision to confirm a claim. No 
amendment can be made in response to the final Office action, other 
than to cancel claims (where cancellation does not change the scope of 
any pending claim), to rewrite dependent claims into independent form, 
or to comply with requirements or suggestions set forth in the final 
Office action. The final Office action will set (1) a time period in 
which any Patent Owner amendment and appeal must be filed, and/or (2) a 
time period in which any Third Party Requester appeal must be filed.
    To effect this proposed change, the USPTO would amend 37 CFR 1.949-
1.953 to create a single, final Office action that closes prosecution 
and triggers appeal rights.

3. Third Party Requester's Appellant Brief is Limited To Appealing An 
Examiner's Decision That a Claim is Patentable; Additional Bases To 
Cancel A Rejected Claim Can Only Be Argued in a Respondent Brief 
Following Patent Owner's Appellant Brief

    This proposed change is intended to reduce the number of 
duplicative issues and briefs submitted on appeal, particularly where 
all claims stand finally rejected and the Third Party Requester is 
challenging the examiner's determination not to make additional 
proposed rejections. The statute authorizes the Third Party Requester 
to independently appeal ``any final decision favorable to the 
patentability of any original or proposed amended or new claim of the 
patent.'' 35 U.S.C. 315(b)(1). The current rules, however, permit the 
Third Party Requester to independently appeal ``any final decision 
favorable to the patentability, including any final determination not 
to make a proposed rejection, of any original, proposed amended, or new 
claim of the patent.'' 37 CFR 41.67(a)(2) (2010) (emphasis added).
    The regulatory language, emphasized above, allows the Third Party 
Requester to independently appeal an examiner's determination not to 
adopt a proposed rejection of a claim, even in cases where the same 
claim stands rejected on other grounds that are being appealed by the 
Patent Owner. In this scenario, the Third Party Requester's cross-
appeal merely raises additional grounds on which to affirm the 
examiner's final determination that the claim is unpatentable.
    Courts do not permit such cross-appeals. As the Federal Circuit has 
explained in the context of district court litigation, ``A cross-appeal 
may only be filed `when a party seeks to enlarge its own rights under 
the judgment or to lessen the rights of its adversary under the 
judgment.''' Aventis Pharma S.A. v. Hospira, Inc., ----F.3d----, 2011 
WL 1046187, at *1 (Fed. Cir. Mar. 24, 2011) (quoting Bailey v. Dart 
Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002)). By contrast, 
where ``the district court has entered a judgment of invalidity as to 
all of the asserted claims, there is no basis for a cross-appeal as to 
either (1) additional claims for invalidity or (2) claims of non-
infringement.'' TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 
1151, 1157 (Fed. Cir. 2004) (emphasis added). An unwarranted

[[Page 22860]]

cross-appeal ``unnecessarily expands the amount of briefing,'' and also 
gives ``the appellee an unfair opportunity to file the final brief and 
have the final oral argument.'' Bailey, 292 F.3d at 1362.
    Although a cross-appeal is not the appropriate vehicle to present 
alternative grounds for affirmance, parties are ``free to devote as 
much of their responsive briefing as needed to flesh out additional 
arguments and alternative grounds for affirming the judgment on 
appeal.'' Aventis, ----F.3d at----, 2011 WL 1046187, at *2. See United 
States v. Am. Ry. Express Co., 265 U.S. 425, 435 (1924) (The ``appellee 
may, without taking a cross-appeal, urge in support of a decree any 
matter appearing in the record, although his argument may involve an 
attack upon the reasoning of the lower court or an insistence upon 
matter overlooked or ignored by it.'').
    Consistent with the courts' practice, the USPTO proposes to revise 
its rules governing appeals by Third Party Requesters to prohibit the 
filing of appeals by Third Party Requesters as to any claim that is 
finally rejected on at least one ground. A final rejection of a claim 
on at least one ground is a ``decision adverse to the patentability'' 
of that claim under 35 U.S.C. 315(a)(1), which not only triggers the 
Patent Owner's appeal, but also allows the Third Party Requester to 
``be a party to any appeal taken by the patent owner,'' id. Sec.  
315(b)(2). As a party to the Patent Owner's appeal, the Third Party 
Requester may argue in its responsive briefing that the examiner should 
have made additional rejections against a claim that stands rejected on 
other grounds. By contrast, a ``final decision favorable to the 
patentability'' of a claim under 35 U.S.C. 315(b)(1) is one in which no 
rejection has been finally adopted against that claim.
    To effect this proposed change, the USPTO would amend 37 CFR 41.61, 
41.67, 41.68, 41.71, and/or 41.77. A Third Party Requester's appellant 
brief, if any, would be limited to challenging a final determination in 
which no rejection has been adopted against a particular claim. 
However, if a claim stands finally rejected and is appealed by the 
Patent Owner, then the Third Party Requester may file a respondent's 
brief addressing the Patent Owner's arguments and further challenging 
the examiner's non-adoption of additional proposed rejections against 
that claim. The Patent Owner could then address these arguments in a 
reply brief.
    Comments are invited on the above-proposed changes, as well as to 
the questions below:
    1. Should the USPTO proceed with any efforts to streamline the 
procedures governing ex parte and/or inter partes reexamination 
proceedings?
    2. Should the USPTO place word limits on requests for ex parte and/
or inter partes reexamination?
    3. Should the USPTO revise its existing page or word limits in 
inter partes reexamination following the request?
    4. Should the USPTO place any limitation or criteria on the 
addition of new claims by a Patent Owner in reexamination? If so, what 
kind of limitation or criteria?
    5. Should the USPTO change its interpretation of ``a substantial 
new question of patentability'' to require something more than ``a 
substantial likelihood that a reasonable examiner would consider the 
prior art patent or printed publication important in deciding whether 
or not the claim is patentable''? See MPEP Sec. Sec.  2242, 2642. If 
so, how should it be interpreted?
    6. How much time should Patent Owners and Third Party Requesters 
ordinarily be given to submit a statement, response, or appeal where 
the time for filing the statement, response, or appeal is set by the 
USPTO rather than by statute?
    7. Under what conditions should the USPTO grant a Patent Owner's 
request for an extension of time under 37 CFR 1.550(c) or 1.956, both 
of which provide that extensions of time may only be granted for 
``sufficient cause and for a reasonable time specified''?
    8. Should the USPTO require that any information disclosure 
statement (IDS) filed by a Patent Owner in a reexamination comply with 
provisions analogous to 37 CFR 1.97 and 1.98, and further require that 
any IDS filed after a Notice of Intent to Issue a Reexamination 
Certificate (NIRC) or notice of appeal be accompanied by: (1) an 
explanation of why the information submitted could not have been 
submitted earlier, and (2) an explanation of the relevance of the 
information with regard to the claimed invention?
    9. Under what conditions should a reexamination proceeding be 
merged with another reexamination or reissue proceeding?
    10. What relief can and should be given to a Third Party Requester 
that shows that it did not receive a Patent Owner's statement or 
response within a certain number of days after the date listed on the 
Patent Owner's certificate of service? How many days and what kind of 
showing should be required?
    11. Should the USPTO encourage and/or require that all 
correspondence in reexamination proceedings be conducted electronically 
(e.g., e-filing parties' documents, e-mailing notices of Office actions 
and certificates)?
    12. Should reexamination proceedings remain with the Board in cases 
where the Board has entered a new ground of rejection on appeal and the 
Patent Owner seeks to introduce new evidence and amendments? In 
particular, is it more efficient for three administrative patent judges 
or a single examiner to decide issues involving new evidence and 
amendments?
    13. What other changes can and should the USPTO make in order to 
streamline reexamination proceedings?
    Registration Information: The USPTO plans to make the meeting 
available via Web cast. Web cast information will be available on the 
USPTO's Internet Web site before the meeting. The written comments and 
list of the meeting participants and their associations will be posted 
on the USPTO's Internet Web site (http://www.uspto.gov).
    When registering, please provide the following information: (1) 
Your name, title, and if applicable, company or organization, address, 
phone number, and e-mail address; and (2) if you wish to make a 
presentation, the specific topic or issue to be addressed and the 
approximate desired length of your presentation.
    There is no fee to register for the public meeting and registration 
will be on a first-come, first-serve basis. Early registration is 
recommended because seating is limited. Registration on the day of the 
public meeting will be permitted on a space-available basis beginning 
at 1:30 p.m., Eastern Standard Time, on June 1, 2011.
    The USPTO will attempt to accommodate all persons who wish to make 
a presentation at the meeting. After reviewing the list of speakers, 
the USPTO will contact each speaker prior to the meeting with the 
amount of time available and the approximate time that the speaker's 
presentation is scheduled to begin. Speakers must then send the final 
electronic copies of their presentations in Microsoft PowerPoint or 
Microsoft Word to <a href="/cdn-cgi/l/email-protection#2f5d4a4a574e4246425f5d40594a424a415b4c4042424a415b5c6f5a5c5f5b4001484059"><span class="__cf_email__" data-cfemail="cab8afafb2aba7a3a7bab8a5bcafa7afa4bea9a5a7a7afa4beb98abfb9babea5e4ada5bc">[email protected]</span></a> by May 25, 2011, 
so that the presentation can be displayed in the Auditorium.
    If you need special accommodations due to a disability, please 
inform the contact person (see FOR FURTHER INFORMATION CONTACT) by May 
25, 2011.


[[Page 22861]]


    Dated: April 18, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-9805 Filed 4-22-11; 8:45 am]
BILLING CODE 3510-16-P


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